Guides · Trademark Litigation
Before Filing, and Responding to a Demand
Many trademark disputes are won or lost before anyone files suit.
· Law checked through October 21, 2026
In Short
A brand owner that confirms its own rights, gathers evidence, and picks the right tool (a letter, a marketplace complaint, a domain-name complaint, a Patent and Trademark Office proceeding, or a lawsuit) is in a stronger position than one that sends an aggressive letter first. A business that receives a demand has early options of its own, including a coexistence agreement and, when the threat is concrete, a suit for a declaratory judgment in a court it chooses.
Common situations.
- A company finds a competitor using a similar name and wants it stopped.
- A brand owner is deciding between a cease-and-desist letter and a lawsuit.
- A business receives a letter demanding that it rebrand within 30 days.
- Two companies with similar marks want to agree on how both can keep using them.
For the brand owner: before the first letter.
- Confirm ownership and status. Check that the registration is live and its maintenance filings are current (15 U.S.C. §§ 1058, 1059), that the owner of record is the right company, and that any assignment has been recorded (§ 1060). For an unregistered mark, gather dated proof of first use in each market.
- Check what the registration covers. A registration protects the mark for the goods and services it lists. Rights beyond that listing depend on actual use. See Which Trademark Rights Can Be Enforced.
- Investigate the other side. Search federal and Texas records, capture dated screenshots of the accused use, and consider a documented test purchase. Find out when the other side started; an earlier user may have priority in its own area.
- Assess confusion and defenses honestly. Apply the Fifth Circuit's digits of confusion, and consider likely defenses such as descriptive fair use, laches, and abandonment. See Likelihood of Confusion in the Fifth Circuit and Defenses in Trademark Cases.
- Check marking. If a registered mark was not marked with ® or a similar notice, the owner cannot recover profits or damages unless the defendant had actual notice of the registration (§ 1111).
- Watch the calendar. Delay can rebut the presumption of irreparable harm that supports a preliminary injunction (§ 1116(a)) and can support a laches defense. See Emergency Relief: TROs, Preliminary Injunctions, and Seizures.
- Weigh the cost of overreaching. A defendant that wins may recover attorney's fees in an exceptional case, judged by the strength of the owner's position or the unreasonable way the case was litigated (§ 1117(a); Baker v. DeShong, 821 F.3d 620 (5th Cir. 2016)).
The demand letter.
A demand letter usually identifies the mark and its registrations, describes the accused use, states the legal basis, and asks for specific action by a date. That date has no legal effect.
- It can start a lawsuit in the other side's chosen court. A letter that threatens suit may give the recipient grounds to sue first for a declaration of noninfringement (28 U.S.C. § 2201; MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007)). The Fifth Circuit requires a real and immediate controversy when the suit is filed. A threat aimed at a product design that was not yet fixed was not enough (Vantage Trailers, Inc. v. Beall Corp., 567 F.3d 745 (5th Cir. 2009)).
- Letters to customers carry added risk. False statements to a competitor's customers that disparage its business can support a business disparagement claim under Texas law (Forbes Inc. v. Granada Biosciences, Inc., 124 S.W.3d 167 (Tex. 2003)).
- Texas regulates patent letters, not trademark letters. The Texas statute on bad-faith demand letters covers only claims of patent infringement (Tex. Bus. & Com. Code §§ 17.951-17.955). No comparable Texas statute governs trademark letters.
Other tools before, or instead of, a lawsuit.
| Tool | Used for | What it can do | Limits |
|---|---|---|---|
| Marketplace complaint | Infringing or counterfeit listings | Removal of listings under the platform's policy | The platform's own rules and appeals; no damages |
| UDRP complaint | A domain name registered in bad faith | Transfer or cancellation of the domain | Three elements must be proved; no damages; either side may go to court |
| TTAB opposition or cancellation | A conflicting application or registration | Refusal or cancellation of the registration | Does not stop use; no damages. See TTAB Oppositions and Cancellations |
| Expungement or reexamination petition | A registration for a mark never used, or not used by the relevant date | Cancellation of some or all goods and services | $400 per class; filing windows apply |
| Customs recordation | Counterfeit imports | Detention and seizure at the border | Registered marks only. See Counterfeits and Online Marketplaces |
| Lawsuit | Infringement causing harm | Injunction, profits, damages | Cost and time. See Where Trademark Cases Are Heard |
Domain names. Under the Uniform Domain-Name Dispute-Resolution Policy, the complainant must prove that the domain is identical or confusingly similar to its mark, that the registrant has no rights or legitimate interests in it, and that it was registered and is being used in bad faith (UDRP ¶ 4(a)). If the panel orders a transfer, the registrar waits ten business days before acting and holds off if the registrant shows it has sued (¶ 4(k)). A lawsuit under the federal cybersquatting statute is the alternative (§ 1125(d)). See Trademark Claims Under Federal and Texas Law.
For the business that receives a demand.
The step-by-step response is in Responding to a Trademark Claim. The main strategic choices are:
- Respond, negotiate, or change course. A reasoned denial, modest changes to a logo or trade dress, or a planned transition to a new name.
- Sue first. A declaratory judgment suit can put the case in the recipient's chosen court, but only if the threat is concrete and the recipient's use is real or fixed (Vantage Trailers).
- Challenge the registration. A petition to cancel a registration that is weak, abandoned, or never used can shift the balance. See TTAB Oppositions and Cancellations.
- Agree to coexist. See below.
Coexistence agreements.
A coexistence agreement lets both parties use similar marks on defined terms. Its value depends on the detail.
| Term | What to decide |
|---|---|
| Goods and services | Which products each party may sell under its mark |
| Territory | Where each party may use its mark, including online |
| Form of the marks | Logos, colors, house marks, and other features that keep them distinct |
| Channels and advertising | Stores, marketplaces, search keywords, domain names, and social media handles |
| Expansion | Whether either party may move into new products or regions |
| Registrations | Consent to each other's applications and cooperation with the Patent and Trademark Office |
| Confusion | How misdirected customers, mail, and inquiries will be handled |
| Successors | Whether the agreement binds buyers and assignees of either business |
| Term and disputes | Duration, termination, and how disagreements will be resolved |
A detailed agreement that explains why confusion is unlikely and how the parties will avoid it can carry great weight when the Patent and Trademark Office decides whether to register a mark (In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993)). A bare consent that says only that confusion is unlikely usually carries little weight.
Preserving evidence.
Under Texas law, the duty to preserve evidence arises when a party knows or reasonably should know that there is a substantial chance a claim will be filed and that evidence it holds will be material (Brookshire Bros., Ltd. v. Aldridge, 438 S.W.3d 9 (Tex. 2014)). In federal court, a party that fails to preserve electronic information may face measures to cure the prejudice, and an adverse-inference instruction requires intent to deprive the other side of the information (Fed. R. Civ. P. 37(e)). The duty applies to the sender of a demand letter as well as the recipient.
Records worth keeping:
- Adoption and clearance records, including searches and legal advice.
- Dated evidence of first use in each market.
- Sales by product, channel, and region, and advertising spending by medium.
- Customer communications that show confusion or its absence, such as misdirected emails, calls, reviews, and orders.
- Past versions of websites and social media pages.
- Licenses and records of quality control over licensees.
Sources.
- 15 U.S.C. §§ 1058, 1059, 1060, 1111, 1116(a), 1117(a), 1125(d).
- 28 U.S.C. § 2201.
- Fed. R. Civ. P. 37(e).
- Tex. Bus. & Com. Code §§ 17.951-17.955.
- Uniform Domain-Name Dispute-Resolution Policy ¶¶ 4(a), 4(k).
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).
- Vantage Trailers, Inc. v. Beall Corp., 567 F.3d 745 (5th Cir. 2009).
- Baker v. DeShong, 821 F.3d 620 (5th Cir. 2016).
- Forbes Inc. v. Granada Biosciences, Inc., 124 S.W.3d 167 (Tex. 2003).
- In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993).
- Brookshire Bros., Ltd. v. Aldridge, 438 S.W.3d 9 (Tex. 2014).
- USPTO, Requesting an Expungement or Reexamination Proceeding.
This guide is general information, not legal advice. Law checked through October 21, 2026. See the Disclaimer.